Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 11/30/2023)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88889280 360RACAST(Standard Characters, see http://uspto.report/TM/88889280/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Hon. Trademark Attorney handling this application is refusing registration on the Principal Register under Section 2(e)(1) of the Act: "Home theater systems; digital cameras; video cameras; optical disc players and recorders; digital video players and recorders; head-mounted video displays; computer software; computer software applications, downloadable; computer software for processing digital music files; computer programs; game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; photographic machines and apparatus; cinematographic machines and apparatus; optical machines and apparatus; animated cartoons; downloadable image files; recorded video discs and video tapes; exposed cinematographic films." This refusal is respectfully traversed. As a prefatory note, Applicant's amended goods are: "Home theater systems comprising optical disc players and recorders, audio amplifiers and tuners, audio speakers, and subwoofer; digital cameras; video cameras; optical disc players and recorders; mobile telephones; digital audio players and recorders; digital video players and recorders; signal processors for audio speakers; signal processors for speaker systems; earphones; subwoofers; loudspeakers; speakers for home theaters; wireless speakers; sound speakers; headphones; television receivers; amplifiers; navigation apparatus for vehicles; car audio devices in the nature of audio equipment for vehicles, namely, stereos, amplifiers, equalizers, crossovers and spear housing; Audio amplifiers for use in automobiles; audio optical disc players for use in automobiles; digital audio players for automobiles; portable multimedia players; portable audio players; blank magnetic and optical data carriers; head-mounted video displays; smartphones; personal digital assistants in the shape of a watch; computers; laptop computers; tablet computers; computer peripheral devices; computer software for processing digital music files; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; digital music downloadable from the Internet; downloadable music files; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; cinematographic machines and apparatus; downloadable animated cartoons; downloadable image files; recorded video discs and video tapes featuring music, movies, and animations; electronic sheet music, downloadable; downloadable electronic publications in the nature of brochures in the field of audio technology; exposed cinematographic films; exposed slide films; slide film mounts; all of the foregoing goods intended for use by the general consuming public." They do not include "computer software; computer software applications, downloadable; computer programs; photographic machines and apparatus, optical machines and apparatus." The Hon. Trademark Attorney reasons that the RACAST element of Applicant's mark is a misspelling for "Raycast." She asserts that Internet evidence she appended to the Office Action "describes Raycast, the manner in which angles are manipulated 360 degrees and these angles are used in the imagery of video games" and shows "Raycast is a feature of Artificial Intelligence (AI) and refers to casting a ray that rotates 360 degrees." The first piece of Internet evidence the Examiner relies upon is from http://gamedev.stackexchange.com, a website for professional and independent game developers. It is titled "Unity-How to Raycast in a 360 VR video?" The person posing the questions states he wants to "raycast" inside his video "to show information about some objects which are shown in the video." The second piece of Internet evidence is a portion of a book titled "Game AI Pro 360; Guide to Tactics and Strategy." The description is highly technical and obviously targeted to game developers. The last piece of evidence is from https.//stackoverflow.com, which also is a website for developers and businesses. Notwithstanding having made her refusal, the Hon. Trademark Attorney requires answers to the following questions and information request, and Applicant provides its answers: 1. Is the wording RACAST a novel/misspelling of the wording RAYCAST? ANSWER - NO. 2. Do the goods have the Raycast feature pertaining to imagery, casting rays, 360 degree angle function of the goods? ANSWER - NO 3. Specifically identify the goods that may have the Raycast 360 degree feature, function and characteristic. ANSWER - NONE As the Internet evidence relied upon is targeted to game developers and businesses and Applicant's goods have been amended to indicate they are intended for the general public, and the answers to the Hon. Trademark Attorney's questions are in the negative, Applicant respectfully submits that the mark does not merely describe a function or feature of the goods. Consequently, Applicant respectfully requests that the Section 2(e)(1) refusal to register be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Home theater systems; digital cameras; video cameras; optical disc players and recorders; mobile telephones; digital audio players and recorders; digital video players and recorders; signal processors for audio speakers; signal processors for speaker systems; earphones; subwoofers; loudspeakers; speakers for home theaters; wireless speakers; sound speakers; headphones; television receivers; amplifiers; navigation apparatus for vehicles; car audio devices; car audio amplifiers; car audio optical disc players; digital audio players for automobiles; portable multimedia players; portable audio players; magnetic and optical data carriers; head-mounted video displays; smartphones; personal digital assistants in the shape of a watch; computers; laptop computers; tablet computers; computer peripheral devices; computer software; computer software applications, downloadable; computer software for processing digital music files; computer programs; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; digital music downloadable from the Internet; phonograph records; downloadable music files; game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; photographic machines and apparatus; cinematographic machines and apparatus; optical machines and apparatus; animated cartoons; downloadable image files; recorded video discs and video tapes; electronic sheet music, downloadable; electronic publications; exposed cinematographic films; exposed slide films; slide film mounts
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2019-142255 filed 11/08/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Home theater systems; Home theater systems comprising optical disc players and recorders, audio amplifiers and tuners, audio speakers, and subwoofer; digital cameras; video cameras; optical disc players and recorders; mobile telephones; digital audio players and recorders; digital video players and recorders; signal processors for audio speakers; signal processors for speaker systems; earphones; subwoofers; loudspeakers; speakers for home theaters; wireless speakers; sound speakers; headphones; television receivers; amplifiers; navigation apparatus for vehicles; car audio devices; car audio devices in the nature of audio equipment for vehicles, namely, stereos, amplifiers, equalizers, crossovers and spear housing; car audio amplifiers; Audio amplifiers for use in automobiles; car audio optical disc players; audio optical disc players for use in automobiles; digital audio players for automobiles; portable multimedia players; portable audio players; magnetic and optical data carriers; blank magnetic and optical data carriers; head-mounted video displays; smartphones; personal digital assistants in the shape of a watch; computers; laptop computers; tablet computers; computer peripheral devices; computer software; computer software for processing digital music files; computer software applications, downloadable; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; computer programs; digital music downloadable from the Internet; downloadable music files; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; cinematographic machines and apparatus; phonograph records; downloadable animated cartoons; downloadable image files; game programs for home video game machines; recorded video discs and video tapes featuring music, movies, and animations; electronic sheet music, downloadable; photographic machines and apparatus; downloadable electronic publications in the nature of brochures in the field of audio technology; exposed cinematographic films; optical machines and apparatus; exposed slide films; animated cartoons; slide film mounts; all of the foregoing goods intended for use by the general consuming public.; recorded video discs and video tapes; electronic publicationsClass 009 for Home theater systems comprising optical disc players and recorders, audio amplifiers and tuners, audio speakers, and subwoofer; digital cameras; video cameras; optical disc players and recorders; mobile telephones; digital audio players and recorders; digital video players and recorders; signal processors for audio speakers; signal processors for speaker systems; earphones; subwoofers; loudspeakers; speakers for home theaters; wireless speakers; sound speakers; headphones; television receivers; amplifiers; navigation apparatus for vehicles; car audio devices in the nature of audio equipment for vehicles, namely, stereos, amplifiers, equalizers, crossovers and spear housing; Audio amplifiers for use in automobiles; audio optical disc players for use in automobiles; digital audio players for automobiles; portable multimedia players; portable audio players; blank magnetic and optical data carriers; head-mounted video displays; smartphones; personal digital assistants in the shape of a watch; computers; laptop computers; tablet computers; computer peripheral devices; computer software for processing digital music files; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; digital music downloadable from the Internet; downloadable music files; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; cinematographic machines and apparatus; downloadable animated cartoons; downloadable image files; recorded video discs and video tapes featuring music, movies, and animations; electronic sheet music, downloadable; downloadable electronic publications in the nature of brochures in the field of audio technology; exposed cinematographic films; exposed slide films; slide film mounts; all of the foregoing goods intended for use by the general consuming public.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2019-142255 filed 11/08/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant advises that its Japanese application underlying this application is still pending. Applicant thus requests suspension of this application pending the issuance of that registration and the submission of same to the Hon. Trademark Attorney.

Correspondence Information (current):
      ROBERT B.G. HOROWITZ, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhorowitz@bakerlaw.com; jcupito@bakerlaw.com

The docket/reference number is 041279.3235.
Correspondence Information (proposed):
      Robert B.G. Horowitz, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhorowitz@bakerlaw.com; sborrero@bakerlaw.com; nsamad@bakerlaw.com

The docket/reference number is 041279.3235.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Robert B.G. Horowitz/     Date: 12/10/2020
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant, a New York State Bar member

Signatory's Phone Number: 212 589-4200

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ROBERT B.G. HOROWITZ, ESQ.
   BAKER & HOSTETLER LLP
   
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
Mailing Address:    Robert B.G. Horowitz, Esq.
   BAKER & HOSTETLER LLP
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
        
Serial Number: 88889280
Internet Transmission Date: Thu Dec 10 18:26:23 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020121018262391
4677-88889280-7506763fd59182156e6c6a6c88
66da1e3e73df1ccd5f5db7c3835cb4c5ceae5-N/
A-N/A-20201210181219512487